Pre-trial discovery before the UPC? – Pharmaceuticals, Trade fairs and beyond

Applications for preserving evidence and for inspection are useful tools to prepare a main action before the Unified Patent Court (UPC). In the early days of the Court, it was unclear how frequently these tools would be used, in particular whether the UPC would evolve into a system resembling France’s saisie contrefaçon, where nearly all patent infringement cases begin with a saisie-contrefaçon, i.e., an order to preserve evidence and for inspection.

Two years in, we’re beginning to see a clearer picture. UPC divisions across several Contracting Member States — including Düsseldorf, Paris, Milan, Brussels, The Hague, Copenhagen, the Nordic-Baltic Regional Division, Munich and Mannheim — have granted such orders. An order by the Court of Appeal clarified first basic principles (CoA order from 15.07.2025, Tiru v. Maguin, Valinea, UPC_CoA_327/2025). A recent order by the LD Brussels regarding a soon to be launched biosimilar provided guidance in the pharmaceutical context (LD Brussels order from 12.11.2025, Genentech/Roche v. Organon, UPC_CFI_407 and 408/2025). Various further orders have been handed down in inter alia trade fair cases.

The following article provides an overview of common principles and noteworthy highlights from the case law to date. For an introduction to this topic, please refer to our previous insight.

I. French-Style Saisie before the UPC?

Despite initial speculation, the UPC practice hasn’t developed into a system resembling France’s saisie contrefaçon. In France, around 90% of all patent infringement cases start with an order to preserve evidence and for inspection. At the UPC, the number is closer to 5%. Still, while the UPC divisions balance the interests of the parties involved, they generally follow a pragmatic and patent owner-friendly approach, as we will show below. Therefore, we may see the number of applications increase.

However, it is important to note that the recent amendments of the court fees (which will enter into force on 1 January 2026) have significantly impacted the application to preserve evidence and application for an order for inspection. The costs have been raised from EUR 350 flat each to a fixed fee of EUR 5,000 each plus, in principle, a value-based fee depending on the value of the action.

II. Requirements

a) Validity of the Patent

The Court of Appeal clarified that the Court does not need to assess validity of the patent before issuing an order to preserve evidence or for inspection unless the presumption of validity is seriously in doubt. This might be the case, for example, after a negative outcome in opposition or revocation proceedings before the EPO or a national court. As a result, applicants are generally not required to disclose known prior art unless it could likely affect the ex parte order (CoA, Tiru v. Valinea, Maguin).

b) Necessity of the Measure

Applicants must show that preserving evidence is necessary, i.e., that they have exhausted reasonable means to prove infringement. Here, the courts have applied a generous standard. Orders were granted where the origin of products couldn’t otherwise be clarified (LD Düsseldorf, Bekaert Binjiang Steel Cord v. Siltronic; LD Milan, Primetals Technologies v. Danieli; LD Munich, Nanoval v. ALD Vacuum Technologies.), or if publicly available evidence was insufficient to prove the infringement of all patent claims (LD Paris, Tiru v. Maguin; LD Milan, Progress Maschinen v. AWM/Schnell; LD Milan, Primetals Technologies v. Danieli; similar LD Paris, C-Kore Systems v. Novawell.). Preserving evidence was therefore required to fill in the gaps.

c) Likelihood of Infringement

Applicants must provide reasonably available evidence suggesting that the patent has been infringed or is about to be infringed. The threshold here is also relatively low. There are multiple ways to convince the court that an infringement is likely:

• Publicly available evidence, such as screenshots of the defendant’s website, YouTube videos, or social media posts on Facebook and LinkedIn, is commonly presented (LD Copenhagen, Hybridgenerator v. HGSystem ApS; LD Milan, Progress Maschinen v. AWM/Schnell; LD Paris, Tiru v. Maguin; LD Paris, C-Kore Systems v. Novawell; LD The Hague, Mammoet Holding v. P.T.S. Machinery.)
• In the pharmaceutical context, according to the LD Brussels, the mere submission of an MA application might suffice to demonstrate, with a certain degree of plausibility, that the patent is about to be infringed; however, additional evidence was relied upon to establish the likelihood of infringement (LD Brussels, Genentech/Roche v. Organon.)
• In some cases, the applicant has provided an expert report and/or claim charts (LD Copenhagen, Hybridgenerator v. HGSystem ApS; LD Paris, Tiru v. Maguin; LD Milan, Oerlikon v. Himson; LD Milan, Oerlikon v. Bhagat; LD Milan, Primetals Technologies v. Danieli; LD Düsseldorf, Ecovacs v. Roborock.). The expert report should be drafted with care. It is not enough to merely allege that the patented solution is implemented. In one case before the LD Mannheim it was held that, if the technical result can be achieved in different ways, the applicant must provide evidence that the patented solution is being implemented and not another solution. In that case, the expert report failed to meet the standard. (LD Mannheim, Centripetal v. Palo Alto Networks.)
• Some divisions have also accepted circumstantial evidence, such as the parties’ prior history, which led the court to believe that the defendant may have reverse-engineered the product (LD Paris, C-Kore Systems v. Novawell.). In another case the applicant retrieved a patent-infringing product from a recycling company located near the defendant’s production site. In pre-trial correspondence, the defendant refused to disclose the product’s origin and merely stated it would no longer use the product in production. The court concluded that the applicant had a legitimate interest in securing evidence to confirm the alleged infringement (LD Düsseldorf, Bekaert Binjiang Steel Cord v. Siltronic.).

III. Ex Parte Orders

The court must decide whether the defendant should be heard before an order is granted. The court has to consider the urgency of the action, whether any delay is likely to cause irreparable harm to the applicant or the probability that evidence may be destroyed or otherwise cease to be available.
Here too, the UPC divisions have taken a flexible approach. Most orders were granted ex parte, preserving the element of surprise.

a) Is Urgency Required?

According to the Court of Appeal, urgency is not a requirement for the application itself, but a factor in deciding whether to proceed ex parte.

In the pharma case before the LD Brussels, urgency was established as the court found it plausible that, from a regulatory standpoint, the MA would likely be granted within one year of the MA application. Consequently, the approval of the biosimilar was reasonably anticipated by early 2026. Given further activities from the defendant which showed that the launch of the biosimilar was expected early 2026, the application for preserving evidence and inspection in November 2025 was deemed to be urgent (LD Brussels, Genentech/Roche v. Organon.).

Where trade fairs or conferences were involved, urgency was given due to the imminent or short-lived nature of these events (LD Milan, Oerlikon v. Himson; LD Brussels, Nelissen v. OrthoApnea; LD Milan, Progress Maschinen v. AWM/Schnell; LD The Hague, Data Detection Technologies v. Doytec Automation; LD Düsseldorf, Otec v. Steros GPA Innovative.). In one case before the LD Munich, urgency was not considered at all (LD Munich, Nanoval v. ALD Vacuum Technologies.).

Most applications were considered timely when filed within three months of discovering the infringement (LD Paris, C-Kore Systems v. Novawell; LD Brussels, Nelissen v. OrthoApnea; 2 months sufficient in LD Paris, Tiru v. Maguin; LD Milan, Primetals Technologies v. Danieli; LD The Hague, Mammoet Holding v. P.T.S. Machinery.). In one case before the LD Düsseldorf, the applicant waited five months before withdrawing an opt-out and filing the application; but this delay was not held against them (LD Düsseldorf, Bekaert Binjiang Steel Cord v. Siltronic.). The court recognized that parties may need time to assess whether they want to place their patents under the UPC’s jurisdiction, at least during the early phase of the system.

b) Risk of Evidence Disappearing

There’s no need to prove with certainty that evidence will be lost. Likelihood or demonstrable risk is enough(CoA, Tiru v. Valinea, Maguin.).

In the case before the Court of Appeal preserving evidence might have become difficult or impossible if the product (a waste incineration furnace), which was only recently delivered to the defendant, would have started to be in operation (CoA, Paris, Tiru v. Maguin.).

In other cases, the ease of deleting, changing or transferring digital evidence justified urgent action (LD Milan, Progress, Maschinen v. AWM/Schnell; LD Milan, Primetals Technologies v. Danieli; LD Paris, C-Kore Systems v. Novawell; LD Paris, Tiru v. Maguin; LD Copenhagen, Hybridgenerator v. HGSystem ApS; LD The Hague, Data Detection Technologies; LD Düsseldorf, Otec v. Steros GPA Innovative; LD Düsseldorf, Ecovacs v. Roborock.). In pharmaceutical cases, this risk is not eliminated by regulations requiring companies to maintain documentation of all aspects of medicinal products, according to the LD Brussels, since there remains a risk that the documentation may be moved to a different location (LD Brussels, Genentech/Roche v. Organon.). Similarly, if a defendant is based outside the UPC territory, the risk of moving products abroad was sufficient to justify an order (LD Paris, C-Kore Systems v. Novawell; LD Milan, Oerlikon v. Bhagat; LD Milan, Oerlikon v. Himson.) . Hence, there is a substantial risk that the announcement of an order to preserve evidence and for inspection will lead to the destruction or transfer of the evidence.

IV. Other Considerations

In German national law, the defendant has two hours to contact their lawyers before the order to preserve evidence and inspection is enforced. However, the LD Brussels has ordered that, while the defendant's legal representatives may participate in the actual enforcement of the order, the enforcement must not be delayed in any way. Consequently, there is a risk that the order could be enforced before the lawyers are able to arrive at the premises. It is therefore particularly important that the defendant's employees are adequately trained to handle such a scenario.

It’s still unclear how far a defendant can be required to assist in an inspection. The LD Mannheim considered it “highly questionable” whether it could order a defendant to set up a test environment at its premises as requested by the applicant. Typically, the defendant’s obligations don’t go beyond providing access, turning on machines, supplying consumables or passwords, and disclosing requested information (LD Mannheim, Centripetal v. Palo Alto Networks.).

Courts may allow simultaneous inspections at multiple sites but only if this is necessary to make the measure effective. The applicant must clearly identify these locations and explain why it is relevant (LD Mannheim, Centripetal v. Palo Alto Networks.). Generic requests for inspection “at any other location” or “at all times” will not be granted (LD Düsseldorf, Otec v. Steros GPA Innovative).

The measures to preserve evidence do not have to be limited to the feature where the order is required to prove infringement and fill in the gaps. Rather any evidence can be requested which is necessary to enforce the patent (LD Brussels, Genentech/Roche v. Organon.). According to the LD Düsseldorf an application to preserve evidence and for inspection can also be directed to preserve evidence of individual acts of use. Therefore, the application may include the seizure of invoices and delivery notes if there is an interest in preserving such evidence (LD Düsseldorf, Bekaert Binjiang Steel Cord v. Siltronic.). The LD Düsseldorf also ruled in a trade fair case that the defendant may hand over the accused products to the expert for inspection, ensuring that the inspection does not occur at the trade fair stand, thus preventing any disruption and harm to the defendant's business activities. After the inspection, the products must be returned to the defendant so that they can continue to be presented at the trade fair. Additionally, the court deemed it disproportionate to require documents be handed over for copying at another location if the documents could not be copied at the trade fair. The expert may use their smartphone for this purpose (LD Düsseldorf, Ecovacs v. Roborock.).

V. Conclusion

The developing case law suggests that UPC divisions are taking a practical, applicant-friendly approach to orders to preserve evidence and for inspection, while balancing the interests of the parties. Therefore, we may see the number of applications increase. So far, there appears to be a relatively uniform interpretation of the legal requirements. However, it remains to be seen how different divisions will deal with more complex or borderline cases. To protect against such orders, it may be advisable in certain cases to file a protective letter against orders for preservation of evidence and inspection.